International convention member state legal commitment

An international trademark dispute arose around March 2010. The plaintiff was a European company, and the defendant was a Thai company. The defendant requested Kanung & Partners Law Firm to represent them in the case, replacing the previous legal team. The plaintiff filed an intellectual property case, requesting revocation of the defendant’s trademark registration under Section 67 of the Trademark Act B.E. 2534 (1991), which provides that within 5 years from the date the Registrar issues an order to register a trademark, an interested party may request the court to revoke the trademark registration if it can be shown that they have better rights to the trademark than the registrant, together with the Supreme Court judgment No. 6466/2538, which held that the court may order revocation of trademark registration even if the trademark has been registered for more than five years from the date the Registrar issued the order to register the trademark. The plaintiff also cited the Paris Convention for the Protection of Industrial Property (1967), that if the owner of a registered trademark acted in bad faith, regardless of how long, the registration can be revoked. The defendant argued that the plaintiff’s claim was time-barred, having filed the revocation request more than five years after the Registrar issued the order to register, and therefore could not request revocation of the defendant’s trademark.

The facts of the case were that the Registrar issued an order to register the defendant’s trademark on July 9, 2004, which completed the five-year period on July 9, 2009. The plaintiff filed the revocation request on March 29, 2010, which was more than five years from the date the Registrar issued the order to register the trademark. Thailand is a party to the Paris Convention for the Protection of Industrial Property.

The Central Intellectual Property and International Trade Court considered that although Thailand is a party to the Paris Convention for the Protection of Industrial Property and has obligations to comply with the legal standards of such international convention, Article 6 bis (3) of the Paris Convention, which provides that “No time limit shall be fixed for requesting the cancellation or the prohibition of the use of the marks registered or used in bad faith,” meaning that parties in member countries can request revocation of trademark registration after the expiration of the period prescribed in the domestic law if the trademark registration was made in bad faith, is a provision that applies only to well-known marks, not providing the same protection to ordinary trademarks. Since the plaintiff did not allege that its trademark was a well-known mark, and the case did not involve issues about the well-known status of the plaintiff’s trademark, and the evidence presented by the plaintiff was insufficient to prove that the plaintiff’s trademark was a well-known mark under the Trademark Act B.E. 2534 (1991) and the Ministry of Commerce Announcement on Criteria for Determining Well-Known Marks, the plaintiff could not request revocation of the defendant’s trademark registration after the expiration of five years from the date the Registrar issued the order to register the trademark based on obligations under the Convention. The Supreme Court judgment No. 6466/2538 cited by the plaintiff was a judgment under the Trademark Act B.E. 2474 (1931), which is an old law that did not have provisions prescribing the period for requesting the court to revoke trademark registration, unlike Section 67, paragraph one of the Trademark Act B.E. 2534 (1991), which is the law applicable to this dispute. The facts of the cases also differed, so the Supreme Court judgment could not be used as a guideline for deciding this case. The plaintiff’s claim requesting revocation of the defendant’s trademark registration was therefore time-barred.

In its consideration, the court took into account Thailand’s obligations as a party to the Convention to comply with the legal standards of such international convention. Therefore, if the plaintiff had alleged that its trademark was a well-known mark, and the case involved issues about the well-known status of the plaintiff’s trademark, and if the plaintiff had presented sufficient evidence to prove that its trademark was a well-known mark under the Trademark Act B.E. 2534 (1991) and the Ministry of Commerce Announcement on Criteria for Determining Well-Known Marks, the court’s judgment that the plaintiff’s claim requesting revocation of the defendant’s trademark registration was time-barred might have been different.

Therefore, international conventions to which Thailand is a party are legal principles that cannot be overlooked, especially in proceedings before specialized courts such as the Intellectual Property and International Trade Court, and in international arbitration proceedings.